Ex Parte Moravek et alDownload PDFPatent Trial and Appeal BoardMay 4, 201813655823 (P.T.A.B. May. 4, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/655,823 24959 7590 PPG Industries, Inc. IP Law Group One PPG Place 39th Floor Pittsburgh, PA 15272 10/19/2012 05/04/2018 FIRST NAMED INVENTOR Scott J. Moravek UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 10007446Al 2768 EXAMINER WALTERS JR, ROBERTS ART UNIT PAPER NUMBER 1717 MAILDATE DELIVERY MODE 05/04/2018 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SCOTT J. MORAVEK and LAWRENCE G. ANDERSON Appeal2017-008026 Application 13/655,823 Technology Center 1700 Before CATHERINE Q. TIMM, JENNIFER R. GUPTA, and DEBRA L. DENNETT, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner's decision to reject claims 1-10 under 35 U.S.C. § 103(a) as obvious over Anderson3 in view of Chung4 . We have jurisdiction under 35 U.S.C. § 6(b). 1 In explaining our Decision, we cite to the Specification of October 19, 2012 (Spec.), the Final Office Action of May 23, 2016 (Final Act.), the Appeal Brief of November 10, 2016 (Appeal Br.), the Examiner's Answer of March 8, 2017 (Ans.), and the Reply Brief of May 8, 2017 (Reply Br.). 2 Appellant is the Applicant, PPG Industries Ohio, Inc., which, according to the Brief, is the real party in interest. Appeal Br. 2. 3 Anderson et al., US 6,610,777 Bl, issued Aug. 26, 2003. 4 Chung, US 4,478,876, issued Oct. 23, 1984. Appeal2017-008026 Application 13/655,823 We REVERSE. The claims are directed to a curable film-forming composition useful for forming cured coatings with an initial 85° gloss of less than 30 and an increase in 85° gloss of no more than 10 gloss units when subjected to WET ABRASION TEST METHOD ONE (claim 1) or WET ABRASION TEST METHOD TWO (claim 10). The Specification identifies the tests as the Amtec-Kistler Car Wash Test DIN 55668, run at 10 cycles (METHOD ONE) and that same test run at 40 cycles (METHOD TWO). Spec. i-f 101. According to the Specification, cured coatings having an initial 85° gloss measurement of less than 30 are "low gloss" coatings. Spec. i-f 93. Low gloss or matte finishes are useful on camouflage aircraft. Spec. i-f 3. The low gloss finish has a rough surface that diffusely reflects visible light. Id. The problem is that the rough surface is difficult to clean and often requires scrubbing that can increase gloss. Id. Appellant seeks a coating that can be repeatedly cleaned with detergents and abrasives without increasing the reflectance (glossiness) of the coating. Spec. i-f 4. To meet this need, Appellant has developed a curable film-forming composition that cures into a coating that, when subjected to either of the two wet abrasion tests, increases in 85 ° gloss no more than 10 gloss units. Spec. i-f 101. The key to achieving the desired low gloss coating is the use of protonated silica particles having an average particle size of 2 to 20 microns. Spec. i-f 58. Claim 1 is illustrative: 1. A curable film-forming composition comprising: (a) a polymeric binder comprising: (i) a polysiloxane having reactive functional groups and in which is dispersed protonated silica 2 Appeal2017-008026 Application 13/655,823 particles having an average particle size of 2 to 20 microns, wherein the polysiloxane is present in the polymeric binder in an amount of at least 10 percent by weight based on the total weight of solids in the polymeric binder; and (ii) optionally at least one additional polymeric resin different from the polysiloxane (i), having reactive functional groups; and (b) a curing agent containing functional groups that are reactive with the reactive functional groups of (i), (ii), or both; wherein after application of the curable film-forming composition to a substrate as a coating and after curing to yield a cured coating, the cured coating demonstrates an initial 85° gloss of less than 30 and an increase in 85° gloss of no more than 10 gloss units when subjected to WET ABRASION TEST METHOD ONE. Appeal Br. 12 (Claims Appendix). Claim 10 requires subjecting the cured coating to WET ABRASION TEST METHOD TWO instead of METHOD ONE. OPINION The first issue we encounter is an issue of claim interpretation. The Examiner gives the last wherein clauses of independent claims 1 and 10 no patentable weight because "they are recitations of the properties of a cured coating resulting from application and curing of the claimed composition, and as such are not directly relevant to the claimed composition." Final Act. 5. We determine that the Examiner improperly discounted the limiting effect of the wherein clauses of claims 1and10. The wherein clauses are 3 Appeal2017-008026 Application 13/655,823 limiting in so far as they require that the curable compositions be capable of forming a cured coating with the gloss properties recited. Thus, the curable composition must have all the attributes that allow it to be capable of curing to form the low gloss coating with the low gloss and low gloss retention properties of claims 1 and 10. Appellant's Specification provides some evidence that a key attribute resulting in the low gloss of the claims and ability to retain the low gloss after the abrasion tests is the large particle size, i.e., 2 to 20 microns, of the protonated silica particles recited in claims 1 and 10. Spec. ,-r 58. The second issue concerns the Examiner's findings regarding the Anderson reference. The Examiner finds that Anderson teaches silica particles having an average particle size overlapping the 2 to 20 micron range of claims 1and10. Final Act. 5 (citing Anderson col. 29, 11. 25-31). This is not exactly what Anderson teaches. Anderson teaches a very broad particle range that is not specific to silica. Column 29, lines 25-31 of Anderson refers to particles generally and discloses a very broad range of less than 100 microns followed by average particle ranges for much smaller particles such as, for instance, 1 to less than 1000 nanometers, 1 to 100 nanometers, 5 to 50 nanometers, and 5 to 25 nanometers. Anderson col. 29, 11. 25--47. Specifically, Anderson makes a very sweeping statement that "the present invention is directed to any composition as previously described wherein the particles have an average particle size of less than 100 microns." Anderson col. 29, 11. 28-30. Anderson's list of potential particles is also broad and sweeping: It includes polymeric and nonpolymeric inorganic materials, polymeric and nonpolymeric organic materials, composite materials, and mixtures of 4 Appeal2017-008026 Application 13/655,823 varying shapes such as spheres, cubic, platy or acicular. Anderson col. 30, 11. 8--41. As found by the Examiner, Anderson teaches including silica particles, but does not teach the particle size. Final Act. 5 (citing Anderson examples 1 and 2, cols. 45--47). The film-forming compositions 1 and 2 of the examples cited by the Examiner include colloidal silica. Anderson col. 45, 11. 29--58; col. 46, 11. 42-58. According to Anderson, when using inorganic oxides such as colloidal silica in a transparent topcoat, particles should not seriously interfere with the optical properties of the composition. Anderson col. 31, 11. 25-39. Anderson also describes using sols that can be a wide variety of small- particle, colloidal silica having an average particle size in ranges such as identified above. Anderson col. 35, 11. 27-31. Anderson does not identify which of the ranges described earlier in the patent are relevant, but describes using dispersions of small particle colloidal silica that are colorless. Anderson col. 35, 11. 43-53. Chung states that colloidal silica is a dispersion of submicron-sized silica particles. Chung col. 7, 11. 61-65. Thus, the ordinary artisan would have understood Anderson to be referring to submicron-sized silica when referring to colloidal silica. Anderson teaches curable compositions for forming glossy cured coatings for, e.g., automotive vehicles, that are resistant to scratching and retain their gloss. Anderson col. 3, 11. 8-15; col. 4, 11. 18-22; col. 5, 11. 56----67; col. 43, 11. 42---64. Anderson's cured coating has an initial 20° gloss of greater than 40, which Anderson says is a high gloss composition. Anderson col. 44, 11. 16-24. Contrary to Appellant's invention, Anderson 5 Appeal2017-008026 Application 13/655,823 seeks a high gloss coating rather than a low gloss coating. And Appellant distinguishes the 2 to 20 micron silica particles they use from silica particles conventionally used in coating applications, which are typically nanoparticles. Spec. i-f 58. Anderson and Chung would have suggested to one of ordinary skill in the art the use of small silica particles in their curable coatings as these coating are formulated to obtain high gloss rather than low gloss coatings. Thus, a preponderance of the evidence supports Appellant's argument (Appeal Br. 10) that the ordinary artisan following the teachings of Anderson and Chung would have selected a silica of average particle size less than 1 micron, a size outside the range of the claims. Thus, Appellant has identified a reversible error in the Examiner's conclusion of obviousness. In summary: 1-10 § 103(a) Summar CONCLUSION Anderson, Chung DECISION The Examiner's decision is reversed. REVERSED 6 1-10 1-10 Copy with citationCopy as parenthetical citation